John Welch at the TTABlog added a new category, “Would You Have Petitioned?” In the case of Augustine’s Spiritual Goods, Inc. v. Augustine’s Eternal Gifts, LLC, maybe I would have. The decision as argued and decided was a no-brainer, but it looks like there’s a disconnect between the case that was argued and the case that could have been.

Briefly, in 2002 petitioner sold its Chicago business to the respondent. The sale documents were prepared without the benefit of counsel, but referred to the sale of “Augustine’s Spiritual Goods.” Here’s the description of what was sold:

(click for larger image)

The seller fairly shortly thereafter opened a business in the Upper Peninsula of Michigan called “Augustine’s Curious Goods.”

In 2007, the respondent/buyer filed an application to register the mark AUGUSTINE’S for “novelty items having a religious theme, namely, incense, perfume oils and scented oils used to produce aromas when heated” in International Class 3, which was duly granted on June 3, 2008. The Michigan seller petitioned to cancel the registration three days later.

The Board had no problem whatsoever finding that the petitioner sold the mark AUGUSTINE’S SPIRITUAL GOODS to the respondent:

We find that there is no ambiguity in the terms of the agreement. For the consideration paid by Carolyn Hennes, she received “[t]he good name of Augustine’s Spiritual Goods, which has an 11 year reputation”; in other words, Hennes acquired the AUGUSTINE’S SPIRITUAL GOODS trademark.11 There are no restrictions or limitations ascribed to the sale of the name. In fact, petitioner, through Frank and Alice Pulaski, the drafters, made clear that although Hennes would be using the mark AUGUSTINE’S SPIRITUAL GOODS, Hennes was not acquiring the corporation, Augustine’s Spiritual Goods, Inc., or any of the licenses in that entity’s name.11 Frank Pulaski testified that the value in “[t]he good name of Augustine’s Spiritual Goods” “was in Alice’s and my reputation,” thereby corroborating that petitioner transferred the goodwill associated with the mark.

But what mark? The Board seems to have cruised right past the concept that a mark is always in association with goods, without remark. I read the Sale Agreement as a sale of a retail business – but the registration sought to be cancelled was in Class 3 for incense and oils. Petitioner is using the mark for those goods:

Was the AUGUSTINE’S mark in use in Class 3 at the time of the assignment? If so, was it transferred also? We just don’t know; neither party mentioned it. I don’t think that a transfer of a retail store operation necessarily transfers the goods manufactured under the mark too. Perhaps it was the same evidence in both cases, but I just find it odd that noone mentioned, even in passing, that the registration is for goods fairly distant from retail store services.

At any rate, good advocacy on the part of respondent; it won by whole instead of half. Petitioners perhaps didn’t use enough of its own products.

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Ms. Chestek is admitted to practice in Connecticut, the District of Columbia, Massachusetts, New York and North Carolina and is Board Certified by the North Carolina State Bar's Board of Legal Specialization in Trademark Law.

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